The Software IP Report

When Is a Patent Claim Indefinite for Encompassing Two Statutory Classes of Invention (e.g., System and Method)?

By Charles Bieneman

Categories: 35 U.S.C. § 112, The Software IP Report

Patent claims can recite the functionality of a system or apparatus without being indefinite under 35 U.S.C. § 112 for encompassing two statutory classes (e.g., system and method), the Federal Circuit has explained in UltimatePointer, LLC v. Nintendo Co., Ltd., No 2015-1297 (Fed. Cir. March 1, 2016). Thus, the three-judge panel (Judge Lourie wrote for Judges Dyk and Wallach) reversed the district court’s summary judgment that claims of U.S. Patent No. 8,049,729 were indefinite. However, saving the day for Nintendo, the Federal Circuit, after agreeing with the claim constructions of two lower courts, also affirmed a finding of non-infringement of these claims (and one other).

Claim 1 of the ’729 patent recites

An apparatus for controlling a feature on a computer generated image, the apparatus comprising:

a handheld device including:

an image sensor, said image sensor generating data related to the distance between a first point and a second point, the first point having a predetermined relation to the computer generated image and the second point having a predetermined relation to a handheld enclosure; and

a processor coupled to said handheld device to receive said generated data related to the distance between a first point and a second point and programmed to use the distance between the first point and the second point to control the feature on the image.

The district court had concluded that claim 1 and other claims were indefinite under 35 U.S.C. § 112, 2nd paragraph, as “directed to both an apparatus and a method for using that apparatus.” The district court pointed to the recitation of an “apparatus” that included a “handheld device” with “an image sensor generating data” as making “it unclear whether infringement occurred when an infringing system is assembled, or when ‘the apparatus is used to perform the specified function.’”

Not so fast, said the Federal Circuit. This case was distinguishable from IPXL Holdings, LLC v., Inc., 430 F.3d 1377 (Fed. Cir. 2005), in which the court held claims indefinite under Section 112, 2nd paragraph, because it was unclear whether claims were infringed when an infringing system was created, or when it was used. Here, in contrast, “the claims at issue . . . make clear that the ‘generating data’ limitation reflects the capability of that structure rather than the activities of the user.”

This case was thus unlike cases where the court had found claims indefinitely directed to two statutory classes, specifically IPXL and In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011) (system claim was made indefinite by limitation “wherein said certain of said individual callers digitally enter data”). This case was more like Microprocessor Enhancement Corp. [MEC] v. Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). There, claims recited “a computer processor with different stages, including ‘performing a Boolean algebraic evaluation,’ ‘producing an enable-write,’ later ‘enabling’ or ‘disabling,’ and, at a different stage, ‘determining.’” This claim was not directed to two statutory classes because it was “clearly limited to a . . . processor possessing the recited structure and capable of performing the recited functions.” (Emphasis in original MEC opinion.)

Similar to the claims in MEC, in the claims of the ’729 patent “the ‘data generating’ limitations only indicate that the associated structures have this capability (for example, the image sensor and processor in claim 1) and do not require that any data be actually generated by the user.” IPXL and Katz were distinguishable because here “[t]he claims do not recite functionality divorced from the cited structure.” Thus, instead of claiming “both an apparatus and a method,” the claims of the ’729 patent instead covered “an apparatus with particular capabilities.”

This decision should not make the patent prosecutor complacent or careless about including functional language in a system or device claim, as often must be done. However, it does provide some comfort, and some ammunition, when a patent examiner issues a Section 112, 2nd paragraph rejection, or alleges that certain functional claim language should not have patentable weight.

Moreover, as noted above, a significant portion of this opinion was devoted to questions of claim construction and a non-infringement determination. Those issues are beyond the scope of this blog post, but well worth pondering. One of the claim construction questions was whether patentee statements in the specification derogating certain technology excluded that technology from the scope of the claims. The Federal Circuit agreed that it did – another useful reminder for patent prosecutors, and a guide for patent litigation defense counsel.